VIAGRA wins against VIAGUARA

Pfizer, as proprietor of the Community word mark "VIAGRA", brought proceedings against a spirits company which had launched alcoholic mixed drinks under the designation VIAGUARA on the market. The Higher Regional Court of Munich (OLG München) had to clarify, in deciding this legal dispute, whether the marks in question were liable to confusion and whether the spirits company was unlawfully exploiting the reputation of the potency agent for its own benefit.

Pfizer is the proprietor of the well-known Community mark "VIAGRA" registered for medicinal products for the treatment of erectile dysfunction. The spirits company is the proprietor of the internationally registered word mark "VIAGUARA". Pfizer sent a cease-and-desist notice to the spirits manufacturer on account of mark collision between "VIAGRA" and "VIAGUARA", and demanded cessation, which was not granted by Pfizer. The spirits company disputed any mark infringement, since its mark for spirits referred to "Guarana" and could not be confused with a potency agent.

Court's decision
The Higher Regional Court of Munich (OLG München) decided in its judgment of 17.06.2010 – 29 U 4083/09, in favour of the American pharmaceutical company.
The judges were of the view, first, that there exists a high degree of phonetic similarity between the two marks according to the overall impression of the relevant circles of the public.

The sign similarity existing here was not precluded by the fact that the sign "VIAGUARA" possessed a clearly recognisable unambiguous meaning. The court was unable to discern any such meaning. Rather, the two marks draw on the same verbal element and are perceived by the public as marks of the same undertaking.

Furthermore, "VIAGUARA" unlawfully exploits the reputation of the world-famous mark "VIAGRA" in order to offer its products successfully and to increase their sales.

Conclusion

Unlawful exploitation of a mark can occur whenever an applicant mark has a high degree of similarity to an existing well-known mark and wishes to exploit this reputation for its own purposes. Ultimately, the degree of distinctive character of the marks in dispute and the degree of reputation must be assessed on a case-by-case basis.